Appeal No. 2003-1303 4
Application No. 09/351,166
driven against the surface of cylinders s2 to be machined so as to
eliminate any possible play in the manner discussed above. In particular,
it is noted that the effect of any instability in the bearings of cylinder s1
and the support structures thereof, which act as a mounting base for
drilling apparatus 1 can thus be minimized, whereby the drilling operation
becomes very stable and, thus, more accurate. [Emphasis added.]
Based on this disclosure, a person of ordinary skill in the art would recognize that the
“structures” mentioned in the independent claims may comprise, among other things,
the bearings of the adjacent cylinder and the supporting structures (e.g., the bearing
mounts) thereof. Accordingly, the examiner’s first reason for rejecting the claims as
being indefinite is not well founded.
As to the examiner’s second and third reasons for rejecting the claims under 35
U.S.C. § 112, second paragraph, it appears that the examiner is reading the
terminology “the at least one support member of the drilling apparatus” of claims 2-4 on
a single one of the disclosed support members 4 and 29; however, we do not consider
the claim terminology to be so limited. From our perspective, a person of ordinary skill
in the art would appreciate that “the at least one support member” terminology of claims
2-4 broadly encompasses both elements 4 and 29.2 Thus, the examiner’s second and
third reasons for rejecting the claims as being indefinite also are not well founded.
As to the examiner’s fourth reason for rejecting the claims under 35 U.S.C. §
112, second paragraph, both claims 6 and 8 call for the feed frame to be radially
2Consistent with this interpretation, appellants’ specification (e.g., page 7, lines 2-
3 and 21-23) uses the term “support member” in describing elements 4 and 29.
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